Ex Parte Kumano et al

Board of Patent Appeals and Interferences

Feb 24, 2012

10543816 (B.P.A.I. Feb. 24, 2012)

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.
10/543,816 08/01/2005 Atsuo Kumano 10089/27 6021
23838 7590 02/24/2012
KENYON & KENYON LLP
1500 K STREET N.W.
SUITE 700
WASHINGTON, DC 20005
EXAMINER
MENON, KRISHNAN S
ART UNIT PAPER NUMBER
1777
MAIL DATE DELIVERY MODE
02/24/2012 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ATSUO KUMANO, KATSUSHIGE MARUI,
HIDETO KOTERO, and NOBUYA FUJIWARA
____________

Appeal 2010-004289
Application 10/543,816
Technology Center 1700
____________

Before PETER F. KRATZ, CATHERINE Q. TIMM, and
JEFFREY T. SMITH, 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, 2, 8-10, 17, and 18. We have
jurisdiction pursuant to 35 U.S.C. § 6.

Appeal 2010-004289
Application 10/543,816

2

Appellants’ claimed invention is directed to a hollow fiber membrane
module and an arrangement of a group of such modules.
Claim 1 is illustrative and reproduced below:
1. A hollow fiber membrane module comprising a hollow fiber
membrane sub-module that comprises at least two hollow fiber membrane
elements each having a feed fluid distribution pipe, the hollow fiber membrane
elements having a permeated fluid collector
at each end, the sub-module being installed in a pressure vessel,
(a) the pressure vessel having a permeated fluid outlet at each end;
(b) the pressure vessel having at least two feed fluid passage nozzles on
the outer peripheral side in the vicinity of one end;
(c) the feed fluid passage nozzles communicating with the feed fluid
distribution pipe;
(d) the pressure vessel having at least two concentrated fluid passage
nozzles on the outer peripheral side in the vicinity of the other end; and
(e) an internal pipe inside the feed fluid distribution pipe,
wherein the hollow fiber membranes are arranged in a crisscross fashion
around the feed fluid distribution pipe, wherein the at least two hollow fiber
membrane elements are arranged in parallel so that a feed fluid is supplied in
parallel to the elements, and wherein the cross-sectional area of the feed fluid
distribution pipe is 1% to 15% of the cross-sectional area of the hollow fiber
membrane element, and wherein the external cross-
sectional area of the internal pipe is 7% to 20% of the internal cross-sectional
area of the feed fluid distribution pipe.

The Examiner relies on the following prior art references as evidence
in rejecting the appealed claims:
Eckman 5,470,469 Nov. 28, 1995
Ikada 6,007,723 Dec. 28, 1999

The Examiner maintains the following grounds of rejection:
Claims 1, 2, 8-10, 17, and 18 stand rejected under the ground of non-
statutory obviousness-type double patenting over claims 1-6 of U.S.
Appeal 2010-004289
Application 10/543,816

3
Application No. 10/567,162, now U.S. Patent No. 7,635, 428, in view of
Ikada. Claims 1, 2, 8-10, 17, and 18 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Ikada in view of Eckman.
We reverse the obviousness- type double patenting rejection. We
affirm the 35 U.S.C. § 103(a) rejection. Our reasoning follows.
Obviousness-type Double Patenting
As argued by Appellants, “[t] he claims of the ‘162 application do not
disclose an internal pipe within a feed fluid distribution pipe” (Br. 41). The
Examiner has not reasonably refuted this argument (see generally Ans.).2
Nor has the Examiner established that Ikada provides such a piping
arrangement for a hollow fiber membrane module (Ans. 4, 5, 11, and 12).
Thus, the Examiner’s obviousness assertion concerning Appellants’ claimed
ratio of the pipe cross-sections has not been established as being supported
by either the issued co-pending application claims or Ikada.
It follows that the Examiner has not reasonably established that
Appellants’ claimed hollow fiber membrane module arrangement would
have been an obvious variation of the membrane claimed in the recently
issued co-pending application even when taken together with the additional
disclosure of Ikada.
On this record, we reverse the Examiner’s obviousness-type double
patenting rejection.

1 Our references to the Appeal Brief pages are made by assigning page 1 to
the first page of the unnumbered pages of the Appeal Brief and continuing
thereafter consecutively assigning numbers to the subsequent unnumbered
pages.
2 The Examiner reproduces claims 1 and 6 of U.S. Application No.
10/567,162 (Ans. 11).
Appeal 2010-004289
Application 10/543,816

4

Rejection under 35 U.S.C. § 103(a)
Appellants argue the rejected claims together as a group in the Appeal
Br. (Br. 4-7). Accordingly, we select claim 1 as the representative claim on
which we shall decide this appeal.
The Examiner has determined that Ikada taken together with Eckman
teach or would have suggested a hollow fiber membrane module
corresponding to the membrane module claimed by Appellants (Ans. 5-9
and 13-17). In so doing, the Examiner maintains that: “Eckman teaches
routing the permeate pipe (internal pipe) through the inside of, and
concentric to, the feed distribution pipe” (Ans. 13). Moreover, and as
pointed out by the Examiner, permeate discharge flows in the internal
discharge tube/pipe (40) and feed fluid is supplied through the feed fluid
tube/pipe (36) taught by Eckman (Ans. 6 and 7; Eckman, col. 7, ll. 19-54,
Figs. 1 and 2).
As reasonably determined by the Examiner, one of ordinary skill in
the art at the time of the invention would have been possessed of the skill
level and knowledge “to design the relative sizes of the two pipes” (Ans.
13). Consequently, one of ordinary skill in the art would have reasonably
been expected to determine the workable tube sizes and, in so doing, arrive
at the claimed relative pipe sizes upon routine experimentation. After all,
“[a] person of ordinary skill is also a person of ordinary creativity, not an
automaton.” KSR Int’l. Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007).
Appellants do not argue that Ikada and Eckman, taken together, do not
teach or suggest a hollow fiber membrane module that has a feed fluid pipe
that includes an internal pipe located within it, as taught by Eckman, and
Appeal 2010-004289
Application 10/543,816

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which membrane module generally corresponds to the claimed module,
except for the argued claimed ratio range for the cross-sectional areas of the
internal pipe relative to the cross-sectional area of the feed fluid distribution
pipe. In this regard, Appellants dispute with the Examiner’s obviousness
determination is bottomed on Appellants’ contention that neither of the
applied references “teaches or suggests a hollow fiber membrane module
wherein the external area of the internal pipe is 7% to 20% of the internal
cross-sectional area of the feed fluid distribution pipe, as recited in claim 1”
(Br. 4 and 5).
Appellants argue that the cited references, including Eckman, do not
recognize that the relative ratio of the pipe cross-sectional areas, as claimed,
is a result effective variable; hence this parameter would not have been
subjected to optimization by one of ordinary skill in the art (Br. 4-7).
Additionally, Appellants urge that, even if the Examiner had
established a prima facie case of obviousness, the Declaration of named co-
inventor Atsuo Kumano pursuant to 37 C.F.R. § 1.132 shows unexpected
results and the criticality of the claimed range of ratios of the inner pipe
external cross-sectional area to the internal pipe cross-sectional area of the
feed fluid distribution pipe of 7 to 20 percent, which showing is argued to
rebut any prima facie case of obviousness presented by the Examiner (Br. 5-
7).
We are not persuaded of reversible error in the Examiner’s
obviousness assessment by the argument asserting a lack of a prima facie
case and/or the argument coupled with the rebuttal evidence of alleged
criticality and unexpected results furnished by Appellants.
Appeal 2010-004289
Application 10/543,816

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Firstly, Appellants’ argument that the cited prior art, including
Eckman, do not recognize that the ratio of the pipe cross-sectional areas, as
claimed, is a result effective variable and consequently would not have led
one of ordinary skill in the art to the claimed ratio of cross-sectional areas of
the pipes, is not persuasive. In this regard, Eckman teaches that the
dimensions, including the thicknesses and diameters, of the feed pipe 36 and
inner permeate discharge pipe 40 “may be altered to achieve the desired
function” (col. 8, ll. 14-20). Eckman teaches that “[t]he amount of permeate
removed is a function of the properties of the hollow fiber, feed temperature,
the composition of the feed fluid, the feed to permeate pressure differential,
and the flow rate of the feed fluid” and that the permeate discharge tube 40
is sized to accommodate the permeate fluid flow (col. 5, ll. 36-39 and col. 8,
l. 66- col. 9, l. 3). Eckman teaches that uniform radial flow of the feed fluid
into the hollow fiber bundle is desired (col. 7, ll. 19-27).
Like Appellants, Eckman teaches that the pressure differential
between the feed fluid pressure and the space surrounding the hollow fiber
bundle where the residue (concentrated) fluid accumulates is relatively small
(Eckman, col. 7, ll. 56-65; Spec. 25, ll. 11-14). Like Appellants, Eckman is
concerned with hollow fiber membrane modules that may be used for
“purification and/or desalination of seawater, brackish water and
wastewater” (Eckman, col. 1, ll. 15-19; Spec. 1, ll. 25-30).
Given the above, we agree with the Examiner that Eckman furnishes
sufficient information for one of ordinary skill in the art to deduce that the
feed distribution pipe 36 dimensions, including the internal cross- sectional
area thereof, and the inner permeate fluid discharge tube dimensions 40,
including the external cross-sectional area thereof (and consequently the
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Application 10/543,816

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ratio of these area dimensions), are parameters that one of ordinary skill in
the art would have recognized as being result effective for at least
accommodating desired fluid flow rates and pressure losses in the hollow
fiber membrane modules of the applied prior art combination asserted by the
Examiner. Given the commonality of purposes for the hollow fiber
membrane module of Eckman and Appellants’ module, it would have been
reasonable to expect that, upon the exercise of routine skill, one ordinary
skill in the art would have selected relative sizes for the tubes 36 and 40 of
Eckman, as combined with Ikada, such that a ratio of cross-sectional areas
corresponding to Appellants’ claimed ratio would have been reasonably
been expected to be arrived at. In making an obviousness determination one
“can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.” KSR, 550 U.S. at 418.
Secondly, the 37 C.F.R. § 1.132 Declaration by Atsuo Kumano relied
upon by Appellants to show unexpected results/criticality for the claimed
range of cross-sectional areas is not persuasive for reasons generally
articulated by the Examiner (Ans. 14-17). Significantly, the Declarant does
not describe the test results provided as establishing unexpected results for
the claimed ratio. Moreover, the limited test results presented with
specifically designed hollow fiber membrane modules, as detailed in the
Declaration experiments have not been established as being reasonably
commensurate in scope with the representative claim 1 subject matter, which
claim does not require the specific module assembled for the experiments,
including the specific materials of construction and diameters employed for
the membrane coupled with the specifically sized conduits and the particular
feed fluid and conditions of operation employed. After all, it is well settled
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Application 10/543,816

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that Appellants have the burden of showing that the claimed invention
imparts not just any improvement, but an unexpected improvement. In re
Klosak, 455 F.2d 1077, 1080 (CCPA 1972); see also In re Skoner, 517 F.2d
947, 948 (CCPA 1975) (Expected results are evidence of obviousness just as
unexpected results are evidence of non-obviousness).
Consequently, Appellants have not established that the claimed ratio
of tube areas is critical and/or achieves unexpected results, much more
unexpected results that are commensurate in scope with the claimed subject
matter, on this record.
CONCLUSION/ORDER
The Examiner’s decision to reject claims 1, 2, 8-10, 17, and 18 under
the ground of non-statutory obviousness-type double patenting over claims
1-6 of U.S. Application No. 10/567,162, now U.S. Patent No. 7,635, 428, in
view of Ikada is reversed. The Examiner’s decision to reject claims 1, 2, 8-
10, 17, and 18 under 35 U.S.C. § 103(a) as being unpatentable over Ikada in
view of Eckman 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

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