Wilhelm Heine

Patent Trials and Appeals Board

Sep 23, 2019

14076456 - (D) (P.T.A.B. Sep. 23, 2019)

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.
14/076,456 11/11/2013 Wilhelm HEINE HEIN3004/TL 2545
23364 7590 09/25/2019
BACON & THOMAS, PLLC
625 SLATERS LANE
FOURTH FLOOR
ALEXANDRIA, VA 22314-1176
EXAMINER
PEO, JONATHAN M
ART UNIT PAPER NUMBER
1779
NOTIFICATION DATE DELIVERY MODE
09/25/2019 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):
MAIL@BACONTHOMAS.COM
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte WILHELM HEINE

Appeal 2018-005852
Application 14/076,456
Technology Center 1700
____________

Before ROMULO H. DELMENDO, DONNA M. PRAISS, and
SHELDON M. MCGEE, Administrative Patent Judges.

DELMENDO, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2018-005852
Application 14/076,456

2
The Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final decision to reject claims 1 and 3–18.2, 3 We have jurisdiction under
35 U.S.C. § 6(b).
We reverse.
BACKGROUND
The subject matter on appeal relates to a method for filtering and
separating flow media and an apparatus for performing such a method
(Specification filed November 11, 2013 (“Spec.”), ¶ 1). Figure 1
(annotated), which illustrates an embodiment of the invention, is reproduced
from the Drawings filed November 11, 2013, as follows:

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Although the Bibliographic Data Sheet indicates that the
Inventor is the Applicant, the Application Data Sheet filed November 11,
2013 (“ADS”) lists “R.T.S. Rochem Technical Services GmbH” as the
Applicant (ADS 4–5). The Appeal Brief filed November 1, 2017 (“Appeal
Br.”) identifies the real party in interest as “R. S. T. [sic] ROCHEM
TECHNICAL SERVICES. GMBH” (Appeal Br. 2).
2 See Appeal Br. 8–30; Reply Brief filed May 18, 2018 (“Reply Br.”), 2–16;
Final Office Action entered June 1, 2017 (“Final Act.”), 2–12, 14–32;
Examiner’s Answer entered March 29, 2018 (“Ans.”), 3–40.
3 We heard oral arguments from the Appellant’s representative on
September 19, 2019, a written transcript of which will be entered into the
record when it is made available.
Appeal 2018-005852
Application 14/076,456

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Figure 1 above depicts an apparatus 10 including, inter alia, a separator unit
110 with a plurality of membranes (membrane cushions) 13 forming a
membrane stack 12 (shown in Fig. 3) in a pressure-tight housing 14 for
filtering and separating a flow medium 11 into a permeate 18 and a
discharged retentate 19 (id. ¶¶ 32–38, 53). The membranes 13 forming the
membrane stack 12 are described as being “embodied for various separation
areas”—i.e., “embodied for reverse osmosis, for nanofiltration, for
ultrafiltration, of normal filtration, for instance, or also for substance
separation by the method of pervaporation” (id. ¶ 36).
Representative claim 6 is reproduced from the Supplemental Appeal
Brief filed November 27, 2017 (“Supp. Appeal Br.”), as follows:
6. An apparatus (10) for filtering and separating
components of a flow medium (11) by means of membranes (13),
including a substantially pressure-tight housing (14) in which a
plurality of membranes (13) is disposed in a stack, at least one
Appeal 2018-005852
Application 14/076,456

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inlet (15) for the flow medium (11) carried into the apparatus
(10) and to be separated, and at least one outlet (16) for permeate
(18) discharged from the apparatus (10) and an outlet (17) for
discharged retentate (19), the membranes (13) being membrane
cushions which have an opening region (131) for emergence of
the permeate (18) collecting in the membrane cushions’ interior
(137), characterized in that each respective partial set of the
plurality of membranes (13), which form a membrane stack
(12), have different separation techniques from each other
partial set based on the flow medium (11) to be separated in the
partial set of the plurality of membranes forming the stack.
(Supp. Appeal Br. 4 (emphasis added)). Method claims 1 and 3, which are
the only other independent claims on appeal, recite the same or similar
disputed limitations as highlighted above in reproduced claim 6 (id. at 3–4).
REJECTIONS ON APPEAL
The claims on appeal stand rejected under AIA 35 U.S.C. § 103,4 as
follows:
A. Claims 6–13 and 18 as unpatentable over Heine (US
2004/0154971 A1, pub. Aug. 12, 2004; “Heine ’971”), Heine et
al. (US 6,524,478 B1, iss. Feb. 25, 2003; “Heine ’478), and
Dufresne et al. (US 2013/0118975 A1, pub. May 16, 2013)
(“Dufresne”);
B. Claims 6 and 14–17 as unpatentable over Heine (US
2006/0273001 A1, pub. Dec. 7, 2006; “Heine ’001”), Heine
’971, and Dufresne;
C. Claim 1 as unpatentable over Heine ’001, Heine ’971, Heine

4 A rejection under 35 U.S.C. § 112(b) of clams 1–17, as set forth in the
Final Action (Final Act. 13–14), was withdrawn in view of an Amendment
filed July 21, 2017 (Advisory Action entered August 24, 2017, 1–2).
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Application 14/076,456

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ʼ478, Dufresne, and Nanofiltration and Reverse Osmosis
(NF/RO), American Membrane Technology Association (2007)
(“NF/RO”); and
D. Claims 3–5 as unpatentable over Heine ’001, Heine ’971, Heine
’478, Dufresne, and NF/RO.
(Ans. 3–40; Final Act. 2–12, 14–32).
DISCUSSION
A key finding underlying each of the Examiner’s rejections is that
Dufresne teaches an apparatus having the disputed limitations highlighted
above in reproduced claim 6 (Ans. 4, 9, 14, 17–18). Based on this finding,
the Examiner concludes that a person having ordinary skill in the art would
have combined Dufresne with the other references to arrive at the claimed
subject matter (id. at 4–5, 9, 14, 18). For the reasons given by the Appellant
(e.g., Appeal Br. 11–12, 16–17) and below, we conclude that the Examiner’s
finding is based on an unreasonable construction of the disputed claim
limitations.
As reproduced above, claim 6 recites “each respective partial set of
the plurality of membranes (13), which form a membrane stack (12), have
different separation techniques from each other partial set” (Supp. Appeal
Br. 4). The Specification reasonably informs one skilled in the relevant art
that membrane cushions or membrane elements 13 as depicted in Figures 1
and 3 form the “membrane stack” (see, e.g., Spec. ¶ 36). Thus, a person
skilled in the relevant art would not have understood a “partial set of the
plurality of membranes (13)” to read on Dufresne’s reverse osmosis (RO)
units or nanofiltration (NF) units 48, which are self-contained units
including “a set of wou[n]d membrane elements arranged end to end in a
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pressure vessel” (Dufresne, Fig. 1 and ¶ 19). In re Baker Hughes, Inc., 215
F.3d 1297, 1303 (Fed. Cir. 2000) (holding that interpreting “hydrocarbon” to
read on gaseous hydrocarbons constituted reversible error in the proper
context of the written description).
Although the Examiner is correct that the term “membrane stack” is
not explicitly defined, “[t]he correct inquiry in giving a claim term its
broadest reasonable interpretation in light of the specification is not whether
the specification proscribes or precludes some broad reading of the claim
term adopted by the examiner.” In re Smith Int’l, Inc., 871 F.3d 1375,
1382–83 (Fed. Cir. 2017). Rather, “[i]t is an interpretation that corresponds
with what and how the inventor describes his invention in the specification,
i.e., an interpretation that is ‘consistent with the specification.’” Id. at 1383
(internal citations omitted).
Under these circumstances, we conclude that the Examiner’s claim
interpretation of the disputed limitations constitutes reversible error.5 In re
Suitco Surface, Inc., 603 F.3d 1255, 1261 (Fed. Cir. 2010).
It follows then that the Examiner’s articulated reasoning is not based
on some rational underpinning to support a conclusion that a person skill in
the relevant art would have combined the references in the manner claimed.

5 In the Answer, the Examiner asserts that the Appellant’s statements in the
Appeal Brief (Appeal Br. 15) are taken “to mean that it would be obvious to
one of ordinary skill to select other membranes to form partial set of
membranes because they are well-known and commercially available based
on the components to be separated” (Ans. 26). We think that the Examiner
takes the Appellant’s statements out of context. In any event, the Appeal
Brief and Reply Brief reasonably dispute the Examiner’s obviousness
analysis, and, therefore, the statements cannot possibly constitute an
admission as to obviousness.
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Application 14/076,456

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KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (citing In re Kahn,
441 F.3d 977, 988 (Fed. Cir. 2006)).
CONCLUSION
In summary:
Claims
Rejected
Basis  Affirmed Reversed
6–13, 18 § 103
Heine ’971,
Dufresne 
6–13, 18
6, 14–17 § 103
Heine ’001, Heine
’971, Dufresne 
6, 14–17
1 § 103
Heine ’001, Heine
’971, Heine ’478,
Dufresne, NF/RO
1
3–5 § 103
Heine ’001, Heine
’971, Heine ’478,
Dufresne, NF/RO
3–5
Overall Outcome § 103 1, 3–18

REVERSED