Ex Parte COTTE et alDownload PDFPatent Trial and Appeal BoardJan 29, 201613534890 (P.T.A.B. Jan. 29, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/534,890 06/27/2012 JOHN M. COTTE 133964 7590 02/02/2016 HOFFMAN WARNICK LLC 540 Broadway 4th Floor ALBANY, NY 12207 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. YOR920090450US3 (312CON) CONFIRMATION NO. 7203 EXAMINER MENON, KRISHNAN S ART UNIT PAPER NUMBER 1777 NOTIFICATION DATE DELIVERY MODE 02/02/2016 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): PTOCommunications@hoffmanwarnick.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JOHN M. COTTE, CHRISTOPHER V. JAHNES, HONGBO PENG, and STEPHEN M. ROSSNAGEL Appeal2014-005560 Application 13/534,890 Technology Center 1700 Before PETER F. KRATZ, MICHAEL P. COLAIANNI, and N. WHITNEY WILSON, Administrative Patent Judges. KRATZ, Administrative Patent Judge. DECISION ON APPEAL This is a decision on an appeal under 35 U.S.C. § 134 from the Examiner's final rejection of claims 1-24. We have jurisdiction pursuant to 35 U.S.C. § 6. Appellants' claimed invention is directed to a filter comprising a membrane having parallel nanochannels formed in an aluminum substrate by anodic oxidation having a surface charge material deposited on an end portion of the nanochannels including a portion deposited within the nanochannels. Further details may be ascertained by a review of claim 1, which is illustrative and reproduced below: Appeal2014-005560 Application 13/534,890 1. A filter, comprising: a membrane having a plurality of parallel nanochannels formed in an aluminum substrate by anodic aluminum oxidation; and a first surface charge material deposited on at least one end portion of the nanochannels, the first surface charge material including a portion deposited within the parallel nanochannels such that a tube dimension at or near the end portion is smaller at or near the end portion than at other portions of the nanochannels, the first surface charge material including a surface charge to electrostatically influence ions in an electrolytic solution such that the nanochannels reflect ions back into the electrolytic solution while passing a fluid of the electrolytic solution. The Examiner relies on the following prior art references as evidence in rejecting the appealed claims: Ramaswamy Richter US 2008/0006574 Al us 3,567,632 Jan. 10,2008 Aug. 8, 1969 The Examiner maintains the following grounds of rejection: Claims 1-24 stand rejected on the ground of non-statutory obviousness-type double patenting as being unpatentable over claims 1-23 of U.S. Patent No. 8,307,994. Claims 1-5, 8-15, 17-19, and 21-24 under 35 U.S.C. § 102(b) as being anticipated by or, in the alternative, under 35 U.S.C. § 103(a) as being 2 Appeal2014-005560 Application 13/534,890 obvious over Ramaswamy. 1 Claims 13-17 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Ramaswamy in view of Richter. We affirm the stated obviousness-type double patenting rejection and obviousness rejections substantially for the reasons set forth by the Examiner in the in Final Office Action and in the Examiner's Answer. We reverse the anticipation rejection. We add the following for emphasis. Concerning the obviousness-type double patenting (ODP) rejection of the appealed claims over claims 1-23 of U.S. Patent No. 8,307,994, Appellants present substantially the same arguments for the rejected claims, including independent claims 1 and 13. Accordingly, we select claim 1 as the representative claim on which we shall primarily focus in deciding this appeal as to the ODP rejection. Appellants argue that the '994 Patent does not claim that at least some of the surface charge material to be deposited within nanochannels is deposited such that a tube dimension is smaller at or near the end portion on which the material is deposited as compared to a tube dimension at other portions of the nanochannels, as is required by Appellants' claim 1 and the other rejected claims (App. Br. 10-11). Appellants' argument is not persuasive of substantive error in the Examiner's ODP rejection because the surface charge material deposited on an end portion of the nanochannels as required by the claims of the '994 Patent would have been reasonably expected to provide for or obviously suggest at least some deposits of the material inside the open end of the 1 Final Office Action 4. In the Examiner's Answer, the Examiner inadvertently omits the alternative obviousness rejection from the heading for rejection D presented at page 4 of the Answer (see Ans. 2, 8). 3 Appeal2014-005560 Application 13/534,890 microchannel that would narrow a microchannel dimension at or near its end given that the microchannel is open at its end and for the reasons expressed by the Examiner in reviewing claims 1, 7 and 16 of the '994 Patent (Ans. 3). After all, claim 1 of the '994 Patent requires the surface charge material to be deposited such that the deposited material electrostatically influences ions in an electrolytic solution while passing the fluid through the microchannels. Thus, claim 1 of the '994 Patent would have reasonably suggested that some of the deposited surface charge material should be in a position within the microchannels where the electrolytic solution would enter and pass as a fluid through. On this record, we affirm the Examiner's obviousness-type double patenting rejection of the appealed claims over the claims of the '994 Patent. As for the Examiner's anticipation/obviousness rejection of claims 1- 5, 8-15, 17-19, and 21-24 under 35 U.S.C. § 102(b) or 35 U.S.C. § 103 as being unpatentable over Ramaswamy, we reverse the anticipation rejection and affirm the obviousness alternative rejection. Our reasoning follows. Anticipation rejection In order for the Examiner to carry the burden of establishing a prima facie case of anticipation, the Examiner must establish where each and every element of the claimed invention, arranged as required by the claim, is found in a single prior art reference, either expressly or under the principles of inherency. See generally In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). We need only consider the independent claims 1 and 13. 4 Appeal2014-005560 Application 13/534,890 For the Appellants' claimed invention to be anticipated, Ramaswamy must disclose to one of ordinary skill in the art a product filter or filter system which falls within the scope of the claimed subject matter without any need for picking, choosing, and combining various disclosures not directly related to each other by the teachings of the cited reference. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008)(quotingin reArkley, 455 F.2d 586, 587(CCPA1972)). Ramaswamy discloses a membrane structure having a variety of configurations that may include a second layer 14 that can have pores of several described pore architectures, sizes, and different materials of construction depending on the end use application and some of which pores can be at least partially (including completely) filled with a filler material, which filler material may comprise a number of different materials that are chosen based on the end use application (see, e.g. Ramaswamy i-fi-f 17, 19-- 27, 29, 30, 41). The Examiner's anticipation rejection requires picking and choosing materials of construction, pore sizes, pore architecture and a filler material and an amount thereof located in the pores from the disclosed choices provided by Ramaswamy in a way such that the membrane structure falls within the scope of the material of construction and membrane structural arrangement requirements of rejected independent claims 1 and/or 13, including being capable of satisfying the membrane functional requirements set forth in claim 1 and/or claim 13 (App. Br. 15-16; Ans. 6- 8; Final Office Action 4---6). Such picking and choosing is improper for an anticipation rejection. Accordingly, we reverse the Examiner's anticipation rejection. Obviousness Alternative 5 Appeal2014-005560 Application 13/534,890 Unlike the anticipation alternative, selecting appropriate materials and pore architecture for the membrane filter depending on the application for the membrane filter as taught by Ramaswamy may be appropriate in a rejection under 35 U.S.C. § 103 wherein the skill of the artisan guided by the reference's disclosures for making such choices comes into play. Here, Appellants' arguments fail to indicate that the Examiner has reversibly erred in determining that one of ordinary skill in the art has sufficient skill to arrive at the claimed subject matter based on the teachings of Ramaswamy as marshalled by the Examiner (Ans. 6-8; Final Office Action 4---6). Appellants do not present separate substantive arguments for the rejected claims. Hence, we select claim 1 as the representative claim on which we focus in deciding the appeal as to this obviousness rejection. Appellants contend that "any material in Ramaswamy that is deposited inside the nanochannels is deposited substantially uniformly within the nanochannels, which causes the nanochannels to have a substantially uniform diameter throughout each nanochannel, as discussed in paragraphs [0016] -[0019] of Ramaswamy" (App. Br. 16-17). As determined by the Examiner, however, Ramaswamy teaches that the pores can be partially filled with filler material, which does not require that the deposits must be deposited substantially uniformly in the nanochannels but rather teaches or suggests that the filler can be deposited so as to narrow the nanochannel (pore) at or near an end of the nanochannel where it is filled as desired for a particular application (Ans. 6-8; Ramaswamyi-fi-f 19, 24, 31, 32, 41, 50-53, 55). In this regard, Ramaswamy is not limited to the metal coating techniques that are argued (App. Br. 17, Ramaswamy i128). Nor have Appellants satisfactorily articulated how the 6 Appeal2014-005560 Application 13/534,890 representative product claim 1 forestalls the use of a removable barrier layer that can be employed by Ramaswamy to prevent filler from entering the pores of other layers (App. Br. 17; Ramaswamy i-fi-152, 53, 58). For reasons set forth above and by the Examiner, Appellants' arguments do not identify reversible error in the Examiner's obviousness rejection of representative claim 1. Consequently, we shall affirm the Examiner's obviousness rejection over Ramaswamy. Appellants' arguments against the Examiner's separate obviousness rejection of claims 13-17 over Ramaswamy in view of Richter correspond to the arguments made against the obviousness rejection over Ramaswamy discussed above (App. Br. 19-22). Such arguments are not persuasive of error in the Examiner's obviousness rejection over Ramaswamy in view of Richter for reasons discussed above and in the Answer. It follows that we shall sustain the Examiner's obviousness rejection of claims 13-17 over Ramaswamy in view of Richter. CONCLUSION/ORDER The Examiner's decision to reject claims 1-5, 8-15, 17-19, and 21- 24 under 35 U.S.C. § 102(b) as being anticipated by Ramaswamy is reversed. The Examiner's decision to reject claims 1-24 on the ground of non- statutory obviousness-type double patenting as being unpatentable over claims 1-23 of U.S. Patent No. 8307994; to reject claims 1-5, 8-15, 17-19, and 21-24 under 35 U.S.C. § 103(a) as being obvious over Ramaswamy; 7 Appeal2014-005560 Application 13/534,890 and to reject claims 13-17 under 35 U.S.C. § 103(a) as being unpatentable over Ramaswamy in view of Richter is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED tc 8 Copy with citationCopy as parenthetical citation