Ex Parte Fukuda et al

Patent Trial and Appeal Board

Mar 22, 2018

14672257 (P.T.A.B. Mar. 22, 2018)

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.
14/672,257 03/30/2015 Nobuhiko FUKUDA 8007-1338 9709
466 7590 03/26/2018
YOUNG fr THOMPSON
EXAMINER
209 Madison Street SHUMATE, ANTHONY R
Suite 500
Alexandria, VA 22314 ART UNIT PAPER NUMBER
1776
NOTIFICATION DATE DELIVERY MODE
03/26/2018 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):
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NOBUHIKO FUKUDA and
TOMOHIDE NAKAMURA
Appeal 2017-006118
Application 14/672,2571
Technology Center 1700
Before ADRIENE LEPIANE HANLON, WESLEY B. DERRICK, and
BRIAN D. RANGE, Administrative Patent Judges.
RANGE, Administrative Patent Judge.
DECISION ON APPEAL
SUMMARY
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 6—8, 13, and 14. We have jurisdiction. 35 U.S.C.
§ 6(b).
We AFFIRM.
1 Appellant is the Applicant, Ube Industries, Ltd., which according to the
Appeal Brief, is also the real party in interest. Appeal Br. 1.
Appeal 2017-006118
Application 14/672,257
STATEMENT OF THE CASE2
Appellant describes the invention as relating to a gas separation
system that separates a gas mixture with gas separation membrane units.
Spec. 11. The system could be used to separate methane and carbon
dioxide. Id. at 147. Claim 6, reproduced below with emphasis added to
certain key recitations and formatting added for readability, is the only
independent claim on appeal and is illustrative of the claimed subject matter:
6. An enriched gas production method wherein a feed
gas mixture comprising at least two different gas species
is supplied to a gas separation system and the gas
separation system is operated to produce an enriched gas
in which at least one gas species among the gas species
included in the feed gas mixture is enriched, the method
comprising:
employing, as the gas separation system, a gas
separation system including a first gas separation
membrane unit, a second gas separation membrane unit,
and a third gas separation membrane unit, wherein:
each of the gas separation membrane units is
provided with a gas inlet port, a permeate gas
discharge port, and a retentate gas discharge port;
the retentate gas discharge port of the first gas
separation membrane unit and the gas inlet port of
the second gas separation membrane unit are
connected by a retentate gas discharge line;
the permeate gas discharge port of the first
gas separation membrane unit and the gas inlet port
2 In this opinion, we refer to the Final Office Action dated February 26, 2016
(“Final Act.”), the Appeal Brief filed July 27, 2016 (“Appeal Br.”), the
Examiner’s Answer dated December 29, 2016 (“Ans.”), and the Reply Brief
filed February 27, 2017 (“Reply Br.”).
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of the third gas separation membrane unit are
connected by a permeate gas discharge line;
a feed gas mixture supply line is connected to
the gas inlet port of the first gas separation
membrane unit; a first compression means is
interposed and arranged in midstream of the feed
gas mixture supply line;
the permeate gas discharge port of the second
gas separation membrane unit and a position on the
suction side of the first compression means in the
feed gas mixture supply line are connected by a
permeate gas return line; and the retentate gas
discharge port of the third gas separation membrane
unit and a position on the suction side or a discharge
side of the first compression means in the feed gas
mixture supply line are connected by a retentate gas
return line;
supplying the feed gas mixture to the first gas
separation membrane unit through the feed gas mixture
supply line, and taking out an enriched gas from either the
retentate gas discharge port of the second gas separation
membrane unit or the permeate gas discharge port of the
third gas separation membrane unit; and
operating the gas separation system under
conditions in which the gas permeability of the second
gas separation membrane unit is higher than the gas
permeability of the third gas separation membrane
unit, and the gas selectivity of the third gas separation
membrane unit is higher than the gas selectivity of the
second gas separation membrane unit.
Appeal Br. 21—22 (Claims App.).
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REFERENCES
The Examiner relies upon the prior art below in rejecting the claims
on appeal:
Baker et al. US 6,565,626 B1 May 20,2003
(“Baker”)
Colling et al. US 2005/0045029 Al Mar. 3, 2005
(“Colling”)
Ungerank et al. US 2013/0098242 Al Apr. 25, 2013
(“Ungerank”)
The Examiner also refers to Ungerank et al., WO 2011/009919 Al,
July 22, 2010 (“Ungerank ’919”) and its English translation available as
Ungerank et al., US 2012/0123079 Al, May 17, 2012 (hereinafter
“Ungerank ’079”). Final Act. 4. Ungerank incorporates Ungerank ’919 by
reference. Ungerank 161.
REJECTIONS
The Examiner maintains the following rejections on appeal:
Rejection 1. Claims 6, 8, 13, and 14 under 35 U.S.C. § 103(a) as
unpatentable over Ungerank in view of Colling. Final Act. 3^4.
Rejection 2. Claim 7 under 35 U.S.C. § 103(a) as unpatentable over
Ungerank in view of Colling and further in view of Baker. Id. at 10—11.
ANALYSIS
We review the appealed rejections for error based upon the issues
identified by Appellant and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential)
(cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011)
(“[I]t has long been the Board’s practice to require an applicant to identify
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the alleged error in the examiner’s rejections.”)). After considering the
evidence presented in this Appeal and each of Appellant’s arguments, we are
not persuaded that Appellant identifies reversible error. Thus, we affirm the
Examiner’s rejections for the reasons expressed in the Final Office Action
and the Answer. We add the following primarily for emphasis.
Appellant does not present separate arguments for the Examiner’s
second rejection or for any dependent claims. See Appeal Br. 4, 19.
Therefore, consistent with the provisions of 37 C.F.R. § 41.37(c)(l)(iv)
(2013), we limit our discussion to claim 6, and all other claims on appeal
stand or fall together with claim 6.
The Examiner finds that Ungerank teaches an enriched gas production
method having the three gas separation membrane units arranged as recited
in claim 1. Final Act. 3—6 (citing Ungerank). Ungerank Figure 11 (not
reproduced here) is illustrative of the Ungerank system. Figure 11 illustrates
feed stream separation stage 1 (corresponding to the first gas separation
membrane unit of claim 6), retante separation stage 2 (corresponding to the
second gas separation membrane unit of claim 6), and permeate separation
stage 3 (corresponding to the third gas separation unit of claim 6). Id.', see
also Ungerank || 33—37. The Examiner finds that Ungerank teaches that
each of its membrane units may have construction different from each other.
Final Act. 6. Ungerank also teaches, for example, that selectivity can be
adjusted to achieve different separation outcomes. Ungerank || 3—4, 29, 63.
The Examiner finds that Ungerank does not explicitly teach the final
recitation of claim 6, namely, “operating the gas separation system under
conditions in which the gas permeability of the second gas separation
membrane unit is higher than the gas permeability of the third gas separation
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membrane unit, and the gas selectivity of the third gas separation membrane
unit is higher than the gas selectivity of the second gas separation membrane
unit.” Final Act. 6. The Examiner finds, however, that Colling teaches
membranes used in groups of modules may be of the same type or different.
Id. (citing Colling). In particular, Colling teaches that “[t]he module group
which deals with smaller streams, may contain membranes of high
selectivity but lower flux.” Colling 130.
Appellant argues that “the fluid feedstock” cited in Colling would not
apply to the second or third stage of Ungerank because feedstock is raw
material that is fed to the first stage of the system. Appeal Br. 6; see also id.
at 9-10 (arguing that Colling fails to teach which membrane should have
higher permeability and lower selectivity). This argument is unpersuasive
because Colling teaches that “[t]he membranes used in each group of
modules may be of the same type or different.” Colling 130. Although one
sentence of Colling’s paragraph 30 refers to a module processing “the bulk
of the fluid feedstock,” that sentence only provides an “example” of how
membranes may be different. Id. After providing that example, Colling
goes on to also state that “[t]he module group which deals with smaller
streams, may contain membranes of high selectivity but lower flux.” Id.
The best reading of Colling as a whole is that the “module group which
deals with smaller streams” need not be the same module that deals with
“the bulk of the fluid feedstock.”
It is the latter sentence of Colling’s paragraph 30 that is most pertinent
to the Examiner’s rejection. The Examiner finds that, in the Ungerank
system, permeate separation stage 3 has the smallest stream (Ans. 5), and
Appellant does not dispute this finding. Thus, a person seeking to optimize
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the membranes of Ungerank would read paragraph 30 of Colling as
suggesting that permeate separation stage 3 should have high selectivity and
lower flux. These characteristics are precisely what claim 6 recites; the third
gas separation unit (corresponding to permeate separate stage 3 of
Ungerank) has lower permeability (i.e., lower flux) than the second unit and
higher selectivity than the second unit.
Appellant also argues that Colling is not analogous art and/or its
teachings would not be combined with Ungerank because Colling is directed
to liquid separation rather than gas separation. Appeal Br. 6—8. This
argument is unpersuasive because its factual premise is not supported by the
preponderance of the evidence. Colling relates to a system for gas
separation. Ans. 10 (citing Colling); see also, e.g., Colling 12—14 (referring
to background art as separating gasses), 121 (“the fluid feedstock is a
gaseous mixture”), 147 (“[f]or the purposes of the present invention, the
permeability of gases through membranes is measured in ‘Barrer’).
Appellant also states that “unexpected results [] would dissipate any
unpatentability. . . .” Appeal Br. 10. A party asserting unexpected results as
evidence of nonobviousness has the burden of proving that the results are
unexpected. In re Geisler, 116 F.3d 1465, 1469—70 (Fed. Cir. 1997). The
evidence of unexpected results also must be reasonably commensurate with
the scope of the claims. In re Peterson, 315 F.3d 1325, 1330-31 (Fed. Cir.
2003) (explaining that applicant may overcome a prima facie case of
obviousness by showing unexpected results but the showing of unexpected
results “must be commensurate in scope with the claims which the evidence
is offered to support”) (internal quotes and citation omitted). “If an
applicant demonstrates that an embodiment has an unexpected result and
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provides an adequate basis to support the conclusion that other embodiments
falling within the claim will behave in the same manner, this will generally
establish that the evidence is commensurate with scope of the claims.” In re
Huai-Hung Kao, 639 F.3d 1057, 1068 (Fed. Cir. 2011).
The Examiner finds that Appellant’s evidence demonstrates that many
different variables changed across Appellant’s experiments.3 Ans. 12—13.
We agree with the Examiner that the evidence and presentation of the
evidence is unclear as to what property is unexpected as compared to the
prior art and that it is unclear why a difference between claim 6 and Colling
led to unexpected results. Id. We also agree with the Examiner that the
Appellant has not provided persuasive evidence that beneficial results were
unexpected rather than expected.4 Id. at 13.
We further note that claim 6 recites a method “comprising” various
steps and is therefore open ended with respect to, for example, membrane
sizes, particular (rather than relative) membrane properties, what additional
membranes, units, and/or steps the claim could entail, and, most importantly,
what gases are involved in the method. Appellant’s proffered evidence is
thus not commensurate in scope with claim 6 because Appellant does not
provide evidence sufficient to support a conclusion that other embodiments
falling within the claim will also provide unexpected results.
3 See In re Dunn, 349 F.2d 433, 439 (CCPA 1965) (“The cause and effect
sought to be proven is lost here in the welter of unfixed variables.”).
4 See In re Freeman, 474 F.2d 1318, 1324 (CCPA 1973) (in order for a
showing of unexpected results to be probative evidence of nonobviousness,
an applicant must establish (1) that there is a difference between the results
obtained through the claimed invention and the prior art and (2) that the
results obtained would not have been expected by one of ordinary skill in the
art at the time of the invention).
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Within Appellant’s unexpected results argument, Appellant also
argues that the recycled gas feed is larger for the allegedly inventive
examples A1 and A2 (meeting the final recitation of claim 6) than for the
comparative example A (where all membranes are the same) and that this
aspect would undermine Ungerank’s goal of enabling a more economically
favorable process by lower recompression. See, e.g., Appeal Br. 17; see also
id. at 15 (Table B providing recompression percentage and amounts for
recycle streams). As the Examiner explains, this argument is also
undermined by Appellant’s experiments changing multiple variables such
that it is inconclusive whether or not satisfaction of the final recitation of
claim 6, per se, leads to higher recompression. Ans. 16.
Moreover, we note that Ungerank discusses its goal of an
economically favorable recycle in comparison to prior art membranes with a
low selectivity. Ungerank 176. The Ungerank system, in paragraph 76,
achieves a recompression of 31.2% as compared to 86.7% in its comparative
examples. Id. Thus, Ungerank indicates that high selectivity generally
lowers recompression rather than relative selectivity between the second and
third membranes. Also, Ungerank is satisfied with a level of recompression
very similar to that achieved by Appellant’s Examples A1 and A2.
Appellant’s argument therefore does not persuasively demonstrate that
recompression rate would be a reason for a person of skill to avoid the
teachings of Colling when employing the apparatus of Ungerank.
In reply, Appellant argues that even if Ungerank and Colling were
combined, a person of skill would not reach the claimed invention. Appeal
Br. 2—8. We decline to consider this argument to the extent it was not
presented in Appellant’s opening brief and is not responsive to a new point
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raised by the Examiner in the Answer. 37 C.F.R 141.41(2) (2013).
Moreover, the Examiner’s rejection is based on the Ungerank apparatus and
making use of Colling’s teaching that different membranes may have
different selectivity and flux and, in particular, that membrane modules
dealing with smaller streams may have higher selectivity and lower flux.
See supra. Thus, even if we were to consider Appellant’s untimely
argument raised in reply, it would be unavailing because the argument does
not squarely address this rejection or what Colling fairly suggests. Rather,
Appellant unpersuasively argues against bodily incorporation of Colling and
Ungerank. “The test for obviousness is what the combined teachings of the
references would have suggested to those having ordinary skill in the art.”
In re Keller, 642 F.2d 413, 425 (CCPA 1981).
On balance, the evidence of record weighs in favor of the Examiner’s
conclusion of obviousness.
DECISION
For the above reasons, we affirm the Examiner’s rejections of
claims 6—8, 13, and 14.
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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