Ex Parte Cheng

Board of Patent Appeals and Interferences

Feb 27, 2007

10302391 (B.P.A.I. Feb. 27, 2007)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte HAITAO CHENG
____________

Appeal 2006-2453
Application 10/302,391
Technology Center 1700
____________

Decided: February 27, 2007
____________

Before THOMAS A. WALTZ, JEFFREY T. SMITH, and LINDA M.
GAUDETTE, Administrative Patent Judges.

GAUDETTE, Administrative Patent Judge.

DECISION ON APPEAL
This appeal involves claims 1-9, the only claims pending in this
application.
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BACKGROUND
The invention is directed to the use of flexible, chemically resistant,
fast curing UV curable adhesive to reinforce fold areas and/or seams of
membranes utilized in spiral filtration modules. Spiral filtration modules
are used for microfiltration, nanofiltration, ultrafiltration, reverse
osmosis, and gas separation. Filtration devices of this type typically
comprise a plurality of spiral filtration modules through which a fluid to
be filtered passes.
Figure 4 of the present specification is reproduced below:

Figure 4 illustrates a single spiral filtration module.
The spiral filtration module includes a permeate carrier tube 20 with
leaf packets 16 circumferentially spaced around it. [0032]. A leaf packet
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16 is formed by folding a membrane sheet 10 in half along its width to
present two membrane leaves 10-X and 10-Y. A membrane sheet 10
comprises a membrane material integrally joined to a backing material.
Sheet 10 is generally folded along a fold line such that the membrane
sides are facing. A feed spacer 17 is positioned between the leaves 10-X
and 10-Y. [0017].
A UV curable adhesive is applied across the width of the membrane
sheet 10 along either side of the fold line prior to folding [0021] to
provide fold protection without adhering the membrane leaves 10-X and
10-Y to each other [0022]. The UV curable adhesive may be applied to
either the backing side or to the membrane side. [0022].
The UV curable adhesive is flexible and has a hardness with a Shore A
range after curing. [0023].
The leaf packets 16 are arranged such that their fold lines are
positioned adjacent to permeate carrier tube 20. [0032]. Permeate carrier
envelopes are formed by positioning a permeate carrier 22A adjacent a
first membrane leaf 10-XA of a leaf packet 16A. A quantity of adhesive
26 is applied along the side edges 28 and/or across the distant axial edge
30 of first leaf 10-XA and/or permeate carrier 22A. A second leaf 10-YB
of adjacent leaf packet 16B is brought into contact with adhesive 26 so as
to form a completed permeate carrier envelope comprised of permeate
carrier 22A sealed between the two leaves 10-XA and 10-YB. The
envelopes are then wound around the tube 20.
In operation, unfiltered fluid passes along the feed spacers 17 in a
direction parallel to the axis of the permeate carrier tube 20, passes
radially through the membrane surface of the permeate carrier envelopes,
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and is directed to holes 24 in the permeate carrier tube 20. [0032].
Because the permeate carrier envelopes are sealed along the side edges
28 and distant axial edges 30, fluid can only enter from a radial direction.
[0033].
Claims 1 and 6 are illustrative of the invention and are reproduced
below:
1. A method of preparing a leaf packet for a spiral filtration module
comprising the steps of:
providing a membrane sheet;
applying a UV curable adhesive to a surface of said membrane sheet,
across the width of said membrane sheet;
exposing said adhesive to UV radiation to cure said adhesive; and
dividing said membrane sheet across the width of said membrane
sheet along a line to provide first and second membrane leaves, wherein said
line is within the portion of said membrane sheet to which said adhesive is
applied in said applying step,
wherein said cured adhesive reinforces said membrane sheet in the
area of said line.
6. A leaf packet useful in forming a spiral filtration module
comprising:
a membrane sheet presenting first and second membrane leaves,
wherein said first and second membrane leaves are divided by a line across
the width of said membrane sheet; and
a strip of UV curable adhesive affixed to the surface of each said leaf
adjacent said line, wherein said adhesive has been exposed to UV radiation
to cure said adhesive, and the cured adhesive reinforces said membrane
sheet in the area of said line.

The Examiner relies on the following prior art references to show
unpatentability:
Bray US 4,842,736 Jun. 27, 1989
Kobayashi US 6,218,465 B1 Apr. 17, 2001
Cheng US 6,433,091 B1 Aug. 13, 2002
Simonetti US 2003/0034293 A1 Feb. 20, 2003

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The Examiner made the following four grounds of rejection:
1. Claims 1, 3, 4, 6, and 7 are rejected under 35 U.S.C. § 102(e) as being
anticipated by Simonetti;
2. Claims 2, 8, and 9 are rejected under 35 U.S.C. § 102(e) as anticipated
by or, in the alternative, under 35 U.S.C. § 103(a) as obvious over,
Simonetti;
3. Claims 6-9 are rejected under 35 U.S.C. § 102(e) as anticipated by or,
in the alternative, under 35 U.S.C. § 103(a) as obvious over, Bray; and
4. Claim 5 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Sirnonetti.
ISSUES

1. The Examiner’s contention is that Simonetti teaches a method of
preparing a leaf packet for a spiral filtration module comprising applying a
UV curable adhesive to a surface of the membrane at the fold line, such that
the adhesive reinforces the membrane at the fold line. Appellant’s
contention is that Simonetti only applies adhesive where leak paths exist,
i.e., along the edges of the membrane sheet and in isolated existing cracks
near the membrane fold line. Appellant maintains that, in filling discrete
cracks, the artisan would not apply adhesive “across the width of the
membrane” nor would there be any reason for the artisan to divide the
membrane sheet across its width "within the portion of said membrane sheet
to which said adhesive is applied.” The issue before us is whether the
Examiner has established that Simonetti inherently discloses applying a UV
curable adhesive across the width of the membrane sheet.
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2. The Examiner’s contention is that Simonetti’s and Bray’s
adhesives would inherently provide reinforcement along the crease of the
membrane sheet. Appellant’s contention is that the claimed UV curable
adhesive has different properties from the prior art adhesives. The issue
before us is whether Appellant has provided sufficient evidence to establish
that the adhesive, as claimed, patentably distinguishes over the prior art
adhesives.
FINDINGS OF FACT

Claim Construction
1) “[T]he term ‘UV curable’ adhesive refers to a specific type of
adhesive having a certain composition and properties. Specifically, a
UV curable adhesive is characterized in that its chemical composition
allows the adhesive to be cured by ultraviolet light or radiation.”
Declaration of Haitao Cheng under 37 C.F.R. § 1.132, ¶ 7.
2) The phrase “across the width” as used in the claims and specification
means extending “from one side to the opposite side,” as depicted in
Figure 1. This definition is consistent with the manner in which
adhesive is applied in the prior art to reinforce the fold line (see Bray,
Fig. 8 and col. 6, ll. 12-23) and with the ordinary meaning of “across”
(see, e.g. Webster’s Third International Dictionary, unabridged)
The Prior Art
3) Simonetti describes a filter element and method of manufacture
in which an undesired fluid flow path through the filter element is
blocked. Abstract.
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Figure 1 of Simonetti is reproduced below:
4) Simonetti Figure 1 illustrates a dual-leaf spiral wound filter element.
The unfiltered feed flow 1 may enter the filter
element from one end . . . along the desired flow
path shown. . . . The permeate 3 may exit the filter
element through the permeate outlet tube 6 around
which envelopes incorporating the filter membrane
(5a, 5b) and backing material (7a, 7b) may be
wrapped. For outlying filter membrane envelopes,
the permeate may be transported to the permeate
outlet tube 6 by the fabric sheet 9 to which the
backing material (7a, 7b) . . . is adhered. [0009].

5) Simonetti teaches that an envelope is created “by folding a composite
sheet of filter membrane (5a, 5b) and backing material (7a, 7b)
around the feed spacer material 8.” [0010].
6) A crease is formed at the fold in the membrane, when it is folded to
make the envelope. See [0012] and claim 54.
7) Simonetti discloses applying an adhesive 4, such as a polyurethane or
an epoxy along a “glue line” which generally runs along the portions
of the fabric sheet 9 and backing material (7a, 7b) near the feed inlet
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and concentrate outlet ends of the filter element [0010] to prevent
unfiltered feed fluid from entering the fabric sheet or backing material
directly through a cross-section [0003].

8) Figure 2 of Simonetti is reproduced below:

9) Simonetti Figure 2 illustrates a portion of the filter element of
Simonetti Figure 1 that lies between two filtration envelopes [0011].
10) The desired flow path 101a is substantially parallel to the surface
plane of the filter membrane and through the filter membrane 105a
and fabric sheet 107a. [0012].
11) Simonetti teaches that some unfiltered feed flow may also travel along
the lateral flow path 101b and enter the filter membrane 105a through
its cross-sectional surface “at either of the ends of the filter element or
at cracks in the filter element, e.g., those that tend to form near the
crease in an envelope." [0012]. As a result, feed flow along the
lateral flow path 101b may avoid filtration through filter membrane
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105a and contaminate the permeate flow being transported by fabric
sheet 9. [0012].
12) To avoid this problem, Simonetti applies a substance 106 to the cross-
sectional face 103 of the membrane sheet “at which the lateral flow
path 101b of unfiltered feed flow would begin” to seal the pores along
the edges and thus block the “inlet of unfiltered feed fluid along the
lateral flow path 101b” [0013].
13) In addition, Simonetti discloses applying the substance 106 to “cracks
[that] may appear in a portion of the filter membrane 105b near the
crease in an envelope of filter membrane material or near the
permeate outlet tube.” [0020].
14) Simonetti does not state that the substance used along the edges and at
discrete cracks reinforces the membrane.
15) Simonetti does not specifically state whether the substance 106 is
applied to cracks which form prior to winding the membranes around
the permeate tube.
16) Substance 106 may be a UV curable adhesive. [0015].
17) Bray relates to improvements in spiral wound membrane cartridges
for use in ultrafiltration and, more particularly, to:
sealing and/or reinforcement about the area of the
fold on the membrane sheet, so that in the event of
crack formation in the membrane at the fold, the
feed fluid cannot have access to the permeate
carrier tube thereby contaminating the permeate.
Col. 5, ll. 52-57.

18) Bray discloses that the sealing means used for reinforcement is an
adhesive, preferably polyurethane glue. Col. 6, ll. 10-11.
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19) Bray also discloses that adhesives used to bond the materials used in
the cartridges may be polyurethanes, epoxy resin formulations and
“other polymeric adhesives such as those which are polymers or
copolymers of vinyl resins.” Col. 5, ll. 45-50.
20) Dr. Haitao Cheng, the named inventors in the present application,
testified that prior to November 22, 2002, the filing date of the present
application, “conventional wisdom held that single-component UV-
cured adhesives were generally weaker, less flexible, and less
chemically resistant than two-component heat-cured adhesives.”
Cheng Declaration, ¶ 7.
21) Dr. Cheng further testified:
At the time the invention disclosed in the
subject application was made, to my knowledge,
known UV curable adhesives would not have been
suitable for use in fold protection in spiral filtration
modules. Specifically, known UV curable
adhesives did not have the combination of
flexibility, hardness and chemical resistance
required for such applications. More specifically,
known UV curable adhesives did not combine
flexibility, hardness in the Shore A range and
resistance to chemicals selected from the group
consisting of chlorine, acidic cleaning solutions
and caustic cleaning solutions. [Cheng
Declaration, ¶ 4.]

22) At the time of making his declaration on November 22, 2004, Dr.
Cheng had been employed in research and development of filtration
modules for three years. Cheng Declaration, ¶ 2. At the time of
making his declaration, Dr. Cheng was qualified to testify as to the
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level of knowledge in November 2002 of one of ordinary skill in the
art of filtration modules.
23) According to Dr. Cheng,
polyurethane adhesives are a different type of
adhesive. Polyurethanes are formed through the
reaction of an isocyanate component with amines,
polyols, or other active hydrogen compounds,
Polyurethane adhesives require a catalyst, heat or
air evaporation to initiate complete curing. Thus,
polyurethane adhesives are different in
composition and property from UV curable
adhesives. [Cheng Declaration, ¶ 8.]

PRINCIPLES OF LAW
1) Anticipation under 35 U.S.C. § 102(e) requires that "each and every
element as set forth in the claim is found, either expressly or
inherently described, in a single prior art reference." In re Robertson,
169 F.3d 743, 745, 49 USPQ2d 1949, 1950 (Fed. Cir. 1999).
2) The Examiner bears the initial burden of establishing a prima facie
case of anticipation. In re King, 801 F.2d 1324, 1326-27, 231 USPQ
136, 138 (Fed. Cir. 1986).
3) A determination that a claim is anticipated involves two analytical
steps. First, the Board must interpret the claim language, where
necessary. Second, the Board must compare the construed claims to a
prior art reference to determine whether each and every limitation is
found either expressly or inherently in that reference. In re Crish, 393
F.3d 1253, 1256, 73 USPQ2d 1364, 1366-67 (Fed. Cir. 2004).
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4) Claim language must be read in light of the specification as it would
be understood by one of ordinary skill in the art, keeping in mind that
broad claim terms should not be limited solely on the basis of
specification passages. In re Bigio, 381 F.3d 1320, 1324-25, 72
USPQ2d 1209, 1211 (Fed. Cir. 2004).
5) Under the principles of inherency, if the prior art necessarily functions
in accordance with, or includes, the claimed limitations, it anticipates.
MEHL/Biophile Intern. Corp. v. Milgraum, 192 F.3d 1362, 1365, 52
USPQ2d 1303, 1305-06 (Fed. Cir. 1999) (citing In re King, 801 F.2d
1324, 1326, 231 USPQ 136, 138 (Fed. Cir. 1986)).
6) Inherency may not be established by probabilities or possibilities, i.e.,
the mere fact that a certain thing may result from a given set of
circumstances is not sufficient. In re Oelrich, 666 F.2d 578, 581, 212
USPQ 323, 326 (CCPA 1981).
7) The examiner bears the initial burden of establishing a prima facie
case of obviousness. In re Kumar, 418 F.3d 1361, 1366, 76 USPQ2d
1048, 1051 (Fed. Cir. 2005).
8) To support a rejection on obviousness grounds, the examiner must
provide a detailed analysis of the prior art and reasons why one of
ordinary skill in the art would have possessed the knowledge and
motivation to make the claimed invention. See In re Kahn, 441 F.3d
977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006).
9) “The mere fact that the prior art may be modified in the manner
suggested by the Examiner does not make the modification obvious
unless the prior art suggested the desirability of the modification.” In
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re Fritch, 972 F.2d 1260, 1266, 23 USPQ2d 1780, 1783-74 (Fed. Cir.
1992).
10) Once the PTO has made an initial determination that specified claims
are not patentable (the prima facie case concept, see In re Oetiker, 977
F.2d 1443, 1448, 24 USPQ2d 1443, 1447 (Fed. Cir. 1992) (Plager, J.
concurring)), the burden of production falls upon the applicant to
establish entitlement to a patent. See In re Spada, 911 F.2d 705, 708,
15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
11) The Board has broad discretion as to the weight to give to declarations
offered in the course of prosecution. See Velander v. Garner, 348
F.3d 1359, 1371, 68 USPQ2d 1769, 1778 (Fed. Cir. 2003)
12) “Although there is ‘no reason why opinion evidence relating to a fact
issue should not be considered by an examiner,’ In re Alton, 76 F.3d
1168, 1175 n. 10 (Fed.Cir.1996), the Board is entitled to weigh the
declarations and conclude that the lack of factual corroboration
warrants discounting the opinions expressed in the declarations.” In
re American Academy of Science Tech Center, 367 F.3d 1359, 1368,
70 USPQ2d 1827, 1833 (Fed. Cir. 2004).

ANALYSIS AND CONCLUSIONS
Simonetti
Claims 1-5:
Appellants argue, inter alia, that Simonetti does not disclose applying
a UV curable adhesive across the width of the membrane sheet. Br. 7.
Rather, Simonetti’s application of the adhesive is limited to leak paths, i.e.,
along the edges of the membrane sheet and in isolated existing cracks near
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the membrane fold line. Br. 7. The Examiner argues that applying the
substance along the fold (or crease) is implied in Simonetti. Answer 13-14.
According to the Examiner, sealing the cracks at the crease as taught by
Simonetti is possible only before winding the membranes around the
permeate tube, and Bray evidences that it is known in the art to seal the fold
of the membrane with a flexible adhesive prior to winding to prevent cracks.
Answer 10.
As pointed out by Appellants, the Examiner has failed to provide
evidentiary support for his contention that Simonetti’s application of UV
curable adhesive is necessarily made prior to the formation of cracks.
Simonetti specifically states that “cracks may appear” and “cracks may be
sealed,” which suggests that the UV curable substances is applied only to
those specific areas of the membranes in which cracks have formed after
assembly of the filtration module. Br. 11. Moreover, even if the Examiner’s
assumption were correct, the Examiner has not established that the only
known method of preventing cracks is to apply adhesive “across the width”
of the membrane.
Because inherency may not be established by probabilities or
possibilities, we conclude that the Examiner has failed to establish a prima
facie case of anticipation of claims 1-4 which include the step of “applying a
UV curable adhesive to a surface of said membrane sheet, across the width
of said membrane sheet.” We further conclude that the Examiner has failed
to establish a prima facie case of obviousness as to claims 2 and 5, since the
Examiner has failed to identify, in Simonetti, any motivation, teaching or
suggestion to extend the application of a UV curable adhesive beyond those
areas in which cracks have formed to cover “the width” of the membrane.
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Claims 6-9:
Appellants argue that Simonetti fails to disclose a leaf packet wherein the
membrane sheet has been reinforced in the area of the crease by a strip of
UV cured adhesive. Br. 14. The Examiner argues that Simonetti’s adhesive
would “inherently provide such reinforcement.” Answer 10. Appellants’
position is supported by the Declaration of Dr. Cheng, which we find
persuasive in establishing that the UV cured adhesive, as claimed, patentably
distinguishes over Simonetti’s adhesive. The Examiner has not provided an
adequate explanation as to why Dr. Cheng’s statements are not sufficient
proof that Simonetti’s leaf packet would not necessarily or inherently
possess the characteristics of the claimed leaf packet. We conclude that the
Examiner has failed to establish a prima facie showing that the claims are
anticipated by or unpatentable over Simonetti.
Accordingly, we reverse the rejections of claims 1, 3, 4, 6, and 7 under
35 U.S.C. § 102(e) as anticipated by Simonetti; claims 2, 8, and 9 under 35
U.S.C. § 102(e) as anticipated by or, in the alternative, under 35 U.S.C. §
103(a) as obvious over, Simonetti; and claim 5 under 35 U.S.C § 103(a) as
unpatentable over Simonetti.
Bray
Claims 6-9:
The Examiner argues that Bray teaches the leaf packet as claimed in
claim 6 having an adhesive to reinforce the fold line. Answer 6. According
to the Examiner, the claim limitation of the adhesive being UV curable is a
process limitation and the patentability of the claimed leaf packet does not
depend on its method of production. Answer 6. The Examiner has,
however, apparently disregarded the claim limitation requiring a UV-cured
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adhesive. We find Dr. Cheng’s declaration persuasive in distinguishing the
claimed UV cured adhesive from the prior art adhesives. The rejection of
claims 6-9 under 35 U.S.C. § 102(e) as anticipated by or, in the alternative,
under 35 U.S.C. § 103(a) as obvious over, Bray is reversed.
REVERSED

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