Ex Parte Kumano et alDownload PDFBoard of Patent Appeals and InterferencesFeb 24, 201210543816 (B.P.A.I. Feb. 24, 2012) Copy Citation 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 5 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 6 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 Appeal 2010-004289 Application 10/543,816 7 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 Appeal 2010-004289 Application 10/543,816 8 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). 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