Ex Parte Bookbinder et al

Patent Trial and Appeal Board

Apr 25, 2017

13115349 (P.T.A.B. Apr. 25, 2017)

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.
13/115,349 05/25/2011 Dana Craig Bookbinder SP10-168 3281
22928 7590 04/27/2017
TORNTNO TNmRPORATFD
EXAMINER
SP-TI-3-1
CORNING, NY 14831
ROLLAND, ALEX A
ART UNIT PAPER NUMBER
1712
NOTIFICATION DATE DELIVERY MODE
04/27/2017 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):
u sdocket @ corning .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DANA CRAIG BOOKBINDER,
GARY S. CALABRESE, YUNFENG GU, and JIANGUO WANG
Appeal 2015-007339
Application 13/115,349
Technology Center 1700
Before GEORGE C. BEST, DONNA M. PRAISS, and
DEBRA L. DENNETT, Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 1—20 of Application 13/115,349
under 35 U.S.C. § 103(a) as obvious. Final Act. (July 10, 2014).
Appellants1 seek reversal of these rejections pursuant to 35 U.S.C. § 134(a).
We have jurisdiction under 35 U.S.C. § 6.
For the reasons set forth below, we AFFIRM. Because our affirmance
relies upon evidence not considered by the Examiner, it constitutes a NEW
GROUND OF REJECTION.
1 Coming Incorporated is identified as the real party in interest. Appeal
Br. 3.
Appeal 2015-007339
Application 13/115,349
BACKGROUND
The ’349 Application describes methods for the production of porous
inorganic membranes and coatings having uniform pore size distribution.
Spec. 12. Such membranes are used for industrial liquid filtration and have
been investigated for gas-particulate separation, gas separation, and catalytic
reactions. Id. 13.
Claim 1 is representative of the ’349 Application’s claims and is
reproduced below from the Claims Appendix:
1. A method for making a single modal porous inorganic
filtration membrane comprising the steps of:
mixing an inorganic material, organic polymer particles
and a solvent to form a slurry, the particles being multi-lobed;
distributing the slurry onto a surface;
drying the slurry to remove the solvent; and
firing the dried slurry to produce the porous inorganic
membrane.
Appeal Br. 23.
REJECTION
On appeal, the Examiner maintains the following rejection:
Claims 1—20 are rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Gu,2 Adilstam ’725,3 and Soria.4 Final
Act. 3.
2 US 2008/0299377 Al, published December 4, 2008.
3 US 2008/0213725 Al, published September 4, 2008.
4 US 6,573,208 Bl, issued June 3, 2003.
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Application 13/115,349
DISCUSSION
Appellants present separate arguments for the patentability of claims
1,11, and 14. See, e.g., Appeal Br. 7. Appellants argue that claims 2—10,
12, 13, and 15—20 are allowable based on their dependence from an
allowable base claim. Id. at 21—22. We, therefore, will address claims 1,11,
and 14 in turn. Claims 2—10, 12, 13, and 15—20 will stand or fall with the
independent claim from which they ultimately depend. 37 C.F.R.
§ 41.37(c)(l)(iv).
Claim 1. Appellants argue that the rejection of claim 1 should be
reversed because (1) the Examiner failed to establish a prima facie case of
obviousness because the combination of Gu, Adilstam ’725, and Soria does
not describe or suggest each limitation of claim 1, Appeal Br. 8—13; (2) the
Examiner failed to provide a persuasive reason to combine Gu, Adilstam
’725, and Soria, id. at 13—18; and (3) the claimed process provides
unexpected and superior results relative to the prior art, id. at 18—20. We
address these arguments seriatim.
First, Appellants argue that the Examiner did not establish a prima
facie case of obviousness with respect to claim 1. Id. at 8—13. In particular,
Appellants argue that the Examiner erred by finding that Adilstam ’725
describes or suggests that the pore forming particles are multi-lobed. Id. at
9-10.
The Examiner responds
that the cited prior art does not explicitly teach pore forming
particles having a multi-lobed shape. Rather, Adilstam [’725]
states that the pore forming particles are allocated a size and/or
shape determining the pore formation [0010], This would have
indicated to one having ordinary skill in the art the importance of
the shape of the pore former as it pertains to the pore shape in the
resulting article. In this way, the shape of the pore forming
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Application 13/115,349
particles is a result effective variable having an effect on the pore
shape in the resulting article. Such result effective variables are
prima facie obvious by routine optimization.
Answer 2; see also id. at 3^4. The relevant portion of Adilstam’725’s 110
reads: “In one embodiment of the inventive concept, the particles are
allocated a size and/or shape determining the pore formation, and the
particles thus forming as pore formers are chosen to be or are insoluble in
the liquid included in the dispersion.” Adilstam ’725 110 (emphasis added).
We regard the portion of Adilstam ’725 cited by the Examiner to be
ambiguous. We, therefore, obtained a copy of Adilstam ’279,5 which is the
original, Swedish-language PCT filing. The portion of Adilstam ’279 which
corresponds to Adilstam ’725’s 110 reads: “In one embodiment of the
inventive idea, the particles are assigned a size and/or form that determines
the pore formation, and the particles that function in this way as pore-
formers are chosen to be or are insoluble in the dispersion comprising the
liquid.” Adilstam ’279 at 7. Furthermore, Adilstam ’279 also states that
“[t]he different pore-forms produce different porosities, as shown in Figures
3—8a, which illustrate[] porous surfaces on the ceramic implant.” Id. at 13
(corresponding to Adilstam ’725 121). Claim 8 of Adilstam ’279 also
describes the effect of using pore-formers with different sizes and shapes:
8. Method according to patent claim 1, characterized in that
different pore-formers with regard to pore-number, pore-size,
and pore-distribution, are used ... to achieve the variation or
variations in the layer’s pore structure.
5 SE 2004-001279, filed September 24, 2003. We cite an English-language
translation of this document. Copies of both Adilstam ’279 and the
translation thereof have been entered into the record of the ’349 Application
and accompany this opinion.
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Application 13/115,349
Adilstam ’279 at 23.
In view of the foregoing, we cannot say that the Examiner committed
reversible error by finding that Adilstam ’725 would have suggested to a
person having ordinary skill in the art at the time of the invention that the
shape of the pore-former was a result-effective variable subject to
optimization and that such a skilled artisan would have arrived at the use of
a multi-lobed pore-former through routine optimization.
Second, Appellants argue that the Examiner has not identified an
adequate reason to combine Gu, Adilstam ’725, and Soria. Appeal Br. 13—
18. In particular, Appellants argue that a person having ordinary skill in the
art would not have combined Soria with Gu and Adilstam ’725 because
Soria describes the use of a paste comprising ceramic particles while Gu and
Adilstam ’725 describe the use of slurries. Id. at 14—15. Appellants further
argue that Soria teaches away from the use of slurries such as those
described in Gu and Adilstam ’725. Id. at 16—18. Based upon these
arguments, Appellants assert that “a person having ordinary skill in the art
would have been deterred and discouraged from combining the relied on
features of Gu and/or Adilstam with Soria’s method for making a
homogeneous bulky porous ceramic material or membrane (col. 3, lines. 16—
26).” Appeal Br. 17.
Appellants’ argument is not persuasive because it does not address the
rejection actually made by the Examiner. In rejecting claim 1, the Examiner
concluded that
it would have been obvious to one having ordinary skill in the art
at the time the invention was made to practice the method of Gu
and Adilstam [’725] and form a single modal membrane because
Soria establishes that there is a reasonable expectation of
success using the same components of Gu and that a single
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Application 13/115,349
modal pore distribution is desirable in the context of a ceramic
filter.
Final Act. 4 (emphasis added). In other words, the Examiner is relying upon
Gu’s methodology—not Soria’s—to make the claimed filtration membrane.
Because Gu’s publication date is several years after Soria’s, a person of
ordinary skill in the art reasonably could assume that Gu’s method does not
suffer from the problems identified in Soria.
Third, Appellants argue that the ’349 Application’s process provides
unexpected results. Appeal Br. 18—20. We agree with the Examiner that
Appellants’ evidence is not commensurate in scope with claim 1. See
Answer 6.
For the reasons set forth above, we affirm the Examiner’s rejection of
claim 1 as unpatentable over the combination of Gu, Adilstam ’725, and
Soria, as evidenced by Adilstam ’279.
Claim 11. Appellants argue that claim 11 is separately patentable
because “Gu does not teach the claimed porosity in monomodal distribution
and Soria relied upon for single modal distribution cannot achieve the
claimed porosity range.” Appeal Br. 21.
This argument is not persuasive because Appellants are attacking the
references individually. The rejection, however, is over the combination of
references. See In re Keller, 642 F.2d 413, 425 (CCPA 1981). We,
therefore, affirm the rejection of claim 11.
Claim 14. Appellants argue that the rejection of independent claim
14 should be reversed for the same or similar reasons as the rejection of
claim 1. See Appeal Br. 20-21.
As discussed above, we have affirmed the Examiner’s rejection of
claim 1. Thus, we also affirm the rejection of claim 14.
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Application 13/115,349
CONCLUSION
For the reasons set forth above, we affirm the rejection of claims 1—20
of the ’349 Application. Because our affirmance relies upon evidence not
considered by the Examiner, we designate it as containing a new ground of
rejection.
This Decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b), which provides that “[a] new ground of rejection pursuant
to this paragraph shall not be considered final for judicial review.” Section
41.50(b) also provides that the appellant, WITHIN TWO MONTHS FROM
THE DATE OF THE DECISION, must exercise one of the following two
options with respect to the new ground of rejection to avoid termination of
the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment
of the claims so rejected or new Evidence relating to the claims
so rejected, or both, and have the matter reconsidered by the
examiner, in which event the proceeding will be remanded to
the examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .
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: NEW GROUND OF REJECTION
PURSUANT TO 37 C.F.R, $ 41,501b)
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